Patents, Industrial Designs, Trademarks and Copyright (Script 231)

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The Dial-A-Law library is prepared by lawyers and gives practical information on many areas of law in British Columbia. This script gives information only, not legal advice. If you have a legal problem or need legal advice, you should speak to a lawyer. For the name of a lawyer to consult, call the Lawyer Referral Service at 604.687.3221 in the lower mainland or 1.800.663.1919 elsewhere in British Columbia.

Inventors, designers, entrepreneurs, writers and other creative and business people often want to protect their ideas and business inventions. But how do you protect an invention, or the brand name of a product, or the words of a song? Through patents, industrial designs, trade-marks and copyright—and sometimes as trade secrets. This script discusses these types of what the law calls “intellectual property”.

Patents

What is a patent?

Suppose that a company, National Mousetrap Corporation, has developed a new and better mousetrap. To protect that invention, it can apply for a patent.

A patent is essentially a contract between an inventor and the federal government. The government gives you, the inventor, the right to prevent others from making, selling or using your invention in Canada (and possibly elsewhere) for the life of the patent. In return, you share the technological information behind your invention, so that others can benefit from and build on this knowledge when the patent expires or they obtain a licence from you.

But the Patent Office does not look at your application automatically. Within 5 years, you must formally ask the Office to consider your application and you must pay the fee. About 2 years after you’ve paid this fee, a government patent examiner familiar with the subject matter will examine your application and decide if it meets the requirements for a patent. If the examiner has any objections to the application, they will issue an examiner’s report explaining why they are rejecting the application. The inventor (or a patent agent they hire) must then respond within a certain time with arguments or amendments (or both) to support their application. The process can take 1 to 4 or more years, and after that, if your application is approved, you’ll receive your patent.

How long does a patent last?

A patent lasts for up to 20 years from the time you first submitted your patent application. To keep your patent alive, you must pay annual government maintenance fees.

A patent application is a complicated process

Most applicants hire a registered patent agent or patent lawyer to help them with the complicated application process. You can get a list of registered patent agents from the Patent Office at CIPO.

Time is of the essence

If you’re concerned about a competitor being on the same track, you should submit your patent application for your invention as soon as possible. In most countries, including Canada, the person who applies first to the Patent Office is given the patent over another person who applies later, claiming the same invention. This is true even if the second person can prove that they invented the same product before the first person did.

Also, any public disclosure, use or sale of your invention starts a one-year clock ticking. After that one year, you cannot obtain a valid patent for your invention. Most countries, other than Canada and the US, don’t allow this one-year grace period—they don’t allow any public disclosure before a patent application can be validly filed, and you could lose your right to obtain a patent internationally if you rely on the one-year grace period in Canada. So it’s important to keep your invention secret and to file your patent application (or evaluate your other options) before you publicly disclose your invention.

Industrial design

What is an industrial design?

Returning to the mousetrap example, imagine that the company has also designed its mousetrap so that it has an attractive shape or design that appeals to consumers. But the company is worried that a competitor might soon copy the look and visual design of the mousetrap. To protect the design, the company can apply to CIPO for an industrial design.

An industrial design protects the unique shape or ornamental appearance of a product. (This differs from a patent, which generally protects how an invention works). Examples of industrial design include the shape of a table, the pattern of a fabric, the visual design of a computer keyboard, and the decoration on the handle of a spoon.

How do you protect an industrial design?

Apply to CIPO for an industrial design. You have to pay the required fees. You must apply within one year after the design, or an article showing the design, has first been publicly used, displayed or sold. Registration protects an industrial design for 10 years, but a maintenance fee must be paid after 5 years. Many countries outside of Canada and the US require you to submit your application for registration before there is any public disclosure of your design, the same as with patents.

Trademarks

What are trade-marks?

Now suppose that the company, National Mousetrap Corporation, has also developed a catchy name to brand the product or a distinctive logo to use on the boxes the mousetraps are sold in and in magazine ads for its mousetraps. To prevent competitors from using the same logo or name, it would apply for trade-mark registration. (Copyright protection for the logo may also be available, discussed later.)

What is a trade-mark?

A trade-mark is a word, logo, symbol or design (or a combination of these) used to distinguish a product or service from competitors in the minds of consumers. The red “K” on a box of Kellogg’s Cornflakes, and the alligator on Lacoste t-shirts, are familiar trade-marks.

How do you protect a trade-mark?

Apply to CIPO for a trade-mark and pay the required fee. You may file a trade-mark application based on use (if you have already started using the trade-mark in your business) or based on proposed use (you intend to use the trade-mark soon, but you haven’t yet started using it). The application is then reviewed by a trade-marks examiner who decides it the application meets the requirements for registration (for example, is it confusing with any prior registrations or applications). After examination and publication of your trade-mark, and if no one opposes it, your trade-mark will be registered.

Although trade-mark applications are not as tricky and complex as patent applications, it’s still best to hire a trade-mark agent to help you with the process. The Trade-marks Office at CIPO keeps a list of agents.

Registering a trade-mark isn’t essential, but can be helpful

While you don’t have to register a trade-mark to use it, registration gives you the exclusive right to use your trade-mark throughout Canada for 15 years and the right to stop others from using a mark that is confusingly like yours. You can also renew your trade-mark every 15 years if you continue to use it in your business. On the other hand, an unregistered trade-mark can be protected only where you can prove the trade-mark is known and has an established reputation.

Copyright

What is copyright?

Suppose that the mousetrap company is ready to launch an advertising campaign. Its advertising department has created a brilliant script for a TV commercial. The law of copyright protects the ownership of the script.

What does copyright mean?

In Canada, the law automatically gives the author, artist or creator of original works like poems, books, plays, musical scores, software codes and paintings ownership rights or “copyright” in that creation. Many items in your business—such as your logo, website, advertising materials and more—are probably protected by copyright. Simply put, copyright means that no one else can copy or substantially reproduce your work without your permission. This right generally lasts during your lifetime plus another 50 years after your death.

When does copyright not apply?

There is no copyright in ideas; only the original expression of an idea can be copyrighted. And if you use your artistic work on a useful article, such as a decorative lamp or goblet, by using the article as a model or pattern to make 50 or more decorative lamps or goblets, then copyright protection, with some exceptions, isn’t usually available. You generally have to apply for registration of an industrial design instead. You also can’t claim copyright in a very short combination of words, such as the title of a book or song.

Do you have to register your copyright?

No, because copyright is automatic, you don’t have to register it. But registering a copyright with CIPO (and paying the required fees) can help prove you own the copyright, especially if you have to sue someone for what’s called “infringement” of your copyright. When you register your copyright, you are the presumed owner of the work and the burden of proof is on the person challenging your copyright to disprove your ownership. If you don’t register your copyright, the burden of proof is on you to prove that you own the copyright.

How to contact the Canadian Intellectual Property Office

Non-disclosure agreements

Can you protect trade secrets and confidential business information?

Courts recognize that businesses should also be able to protect their trade secrets and certain business information that they want to keep confidential. This could include special recipes, training manuals, methods of doing business and inventions that aren’t patented—all of which is kept secret from the public. You don’t register this type of information. Having employees, customers or business partners sign a confidentiality or non-disclosure agreement is the most common way to protect this secret and confidential information, and if someone breaks the agreement, you can sue them. One risk with a trade secret is that once it is no longer secret, it can be lost. Without a contractual obligation, nothing can prevent someone else from independently creating or reverse engineering the subject matter of your trade secret.